Trademark for Fiction Writers… Chapter Two

CHAPTER TWO…

(Please read the introduction and first chapter to this book before reading this. You can find that at… Introduction and First Chapter.)

If, after the introduction and first chapter, you are starting to question why you would ever need to do a trademark for anything in your fiction, let me simply say…”Good.”

As I learned more and more about trademark, I started to understand that this area of the law is very similar to all the myths pushed by traditional book publishers.

In other words, most of it is just flat wrong for fiction writers.

But there are places and times it is right, and understanding that is key and the reason I am doing this short book.

But first more on some basics.

“Trademark law is the body of principles that the courts use to decide disputes regarding names or other devices being used to identify goods and services in the marketplace.”

Stephen Fishman… TRADEMARK. Nolo Press

I want to point out a key phrase: “…courts use…”

Just wanted to point that out. Fishman then goes on to detail out some basic principles of trademark. I am going to quote him here on his first two and as writers, I want you to think about whatever property you were hungry to go file for trademark protection on. You know, that character, that series, that business name, whatever that you have been lead to believe you need to file for trademark protection.

“The first business to use a trademark in a marketplace owns it against later users.”

“To qualify as a trademark, a name, logo, or other device used by a business in its marketing activities must either (1) be unique enough to earn customer recognition on its own… or (2) have earned customer recognition through its continued use over time…”

Stephen Fishman… TRADEMARK. Nolo Press

Then he talks about numbers of other principles, all dealing with court stuff, because trademark laws and principles are designed to settle disputes. Get the book and read them.

So you wrote a nifty book, starting a nifty series. You don’t understand copyright, so you are afraid someone is going to take your series, so you think you need to trademark it for some reason lost to the mists of logic, even though you know nothing about trademark either.

Ask yourself, does this new book of yours have customer recognition, or has it earned customer recognition?

Nope and nope.

And if you really are the first to use this nifty, original idea, not only is the form protected under copyright, but you are already protected under trademark. However, I sincerely doubt (at a level of about 100% certainty) that your idea is original in any fashion, and certainly not enough to be protected past the copyright protection of the form of your writing.

CUSTOMER CONFUSION

Here is another major area that just should make most fiction writers turn away from thinking much about wasting money and time to file for a trademark on a series, a book, or a business name.

Courts, in cases of trademark disputes (remember, trademark law is only to settle disputes) look to see if the infringing trademark (filed or not) would cause customer confusion. If there is no customer confusion, courts toss it.

Say I had a bad brain fart and thought that the term “Pop-Up” that we use for a certain type of teaching form should be trademarked. And the next day, after my brain fart, I walk into a stationary store and see a card that when you open, something pops up saying “Happy Birthday” and the card is called a “Pop-Up.” And I get all angry and sue.

First off, I would not be able to file for the term. It is too common to be accepted. Second, no sane attorney would take the case, and third the court would toss it for lack of customer confusion.

So ask yourself when thinking of spending money filing for trademark protection on a word, logo, or business name… Do I already have first use inside publishing and second, will customers get confused (meaning having someone else use this hurt my sales.)

And then ask if you would be willing to spend even more money going to court to defend your trademark.

In other words, when you apply customer confusion aspects to trademark, it makes things a lot clearer.

NOW A POSITIVE

I will try to end each chapter going forward with one positive about trademark for fiction writers.

Just like copyright, trademark is a property. So if you have something that fits what Fishman said above, and needs to be protected from possible customer confusion, and you manage to get the filing done and the trademark filed federally and in your local state as well, then you have something that might just have some value.

Property has value. Trademark is an IP.

I doubt if many of you understand what kind of value, since most writers don’t understand the value of their own copyrights, let alone how that value can be ascertained. But just trust me, a well-established trademark, protected and renewed, with an active business presence, has value.

11 Comments

1. “First use” trumps everything else, right? And having actual first use might be reason enough NOT to register a trademark?

2. And the fact that my publisher name is both “unique enough to earn customer recognition on its own” and that I have used it continually for around 20 years makes it relatively bulletproof? (Understanding that nothing is completely bulletproof.)

Harvey, not giving you legal advice. Sorry. Not my place. Those are real attorney questions. But from the outside of trademark law, both have value, but remember that trademark is designed to settle law suits and conflicts. Clear answers are not the norm in this area. And trademark registration is yet another ball of stupid I haven’t even gotten to yet. Hang on.

Harvey, this is not legal advice. It is, instead, a couple of practical notes.

(1) What’s your evidence of first use? And, more to the point, if someone else comes along later, registers the same mark in the same classification, and you don’t object, do you understand what happens (which is to say that your first use becomes very difficult to assert indeed)?

(2) What about international issues? If you want to read a really entertaining, and reasonably well-written, judicial opinion on some of those international issues, I suggest one that arose almost exactly 20km from where I’m typing this: Trader Joe’s Co., Inc. v. Hallatt, 835 F.3d 960 (9th Cir. 2016). Hint: The entire case concerns international issues. And grey markets. <sarcasm> But grey-market goods have never been an issue in publishing; right, S&S/Harlequin? </sarcasm> And on the other hand, there’s the steadily diminishing enforceability of territorial restrictions that is going to make this whole swamp even stinkier over then next decade or so… especially after Brexit (or, for that matter, if Brexit is blocked at the last minute).

(3) Just try getting any of the major online marketplaces to respect your assertion of an unregistered mark against one of their customer-vendors. Etsy, in particular, won’t even forward a complaint of trademark infringement to one of its vendors unless the complaint contains both the registration number and date of first use; eBay is even worse. And given that Our Gracious Host is doing these posts based on licensing issues and not just “pump it out on Kindle,” that all matters.

As a specific example, there’s an artist who “specialized” in making commemorative lighters overprinted with covers from famous science-fiction books. He thumbed his nose for years (and was even quite nasty about it when he bothered responding, because the authors were supposed to be grateful for the free publicity) until he made the mistake of doing one where both the author’s name and the series name were registered trademarks, for a series originated in the 1960s. The mark owner was notoriously litigious… and successful. (Our Gracious Host can probably guess exactly who this is.)

(4) “Unique enough to earn customer recognition on its own” is an almost misleading distillation of the actual evidentiary issues, and for that matter doctrinal issues. It’s more likely bullet-ridden than bulletproof, but explaining even the broad outlines (let alone details) would both hijack Our Gracious Host’s blog and come perilously close to a fact-specific explanation that needs to remain privileged between you and your attorney. Suffice it to say that long-term use in commerce such that friends, family, and previous customers associate that name with your publishing operation is step one out of at least seventeen (that is not an exaggeration).

Folks, you need to be carefully reading C.E.’s comments here. Maybe two or three times until you understand what he is saying. He is very kind to take the time to add depth to my light brushing of these topics. Comments and questions one of the real advantages of putting something like this attempt at a light book on a heavy topic here on the blog first. Thank you, C.E.!!!! Very much appreciated.

Thank you C.E. and Dean! My husband, an insurance and general business lawyer, has been downright irritating in his refusal to answer my IP and trademark questions. I thought “not my area” was just one of those “I’m reading, do I really have to hide in the bathroom to do it?” manoeuvres. But no. He was being responsible and realistic 🙂 He is now happy that I realize that, and thanks you. (He’s a gem when it comes to contracts though.)

My congratulations to your husband on knowing and understanding Rule of Professional Conduct 1.1 (which applies in every state except California, and the failure to do so there explains a lot): “A lawyer shall provide competent representation to a client. Competent representation requires the legal knowledge, skill, thoroughness and preparation reasonably necessary for the representation.” And you got the bonus of a husband who, in at least some areas, knows his limitations! {insert string of sexist-but-disturbingly-close-to-reality jokes about male egos here} I’d also caution you that being “a gem when it comes to contracts” also requires some substantial litigator expertise, particularly regarding choice of law. Hint: There’s a reason that so many publishing contracts, even for non-NYC-based publishers, continue to select New York law… and it isn’t that New York law and courts are fair to out-of-state licensors, especially when the publishing contract uses all of the memes and language of a sale but is in substance a license (as required, but not explicitly stated so, under the Copyright Act of 1976).

The reality is that the practice of law is actually at least as specialized as the practice of medicine, but that the regulation of the practice of law is not and does its best to avoid admitting that lawyers are in reality specialists. Including, ironically enough, by prohibiting almost all lawyers from saying that they are specialists (the “s word” is specifically prohibited in Rule 7.4, and there are similar provisions in every other state including California).

🙂 We try to stay out of the courtroom. But choice of law and venue is critical and has been an asset just about every single time. The proposed choice of law in Netherlands had been a deal-killer in the past – too risky, not enough access and control on our part.
You will be amused to know that graft is alive and well in some parts of the EU in probate matters, where a monetary “consideration” can bump up a probate matter from the end of the line to the front (looking at you, Czech Republic), and that the local attorney will do so despite the American client’s instruction against such practice. Then there was the matter of funeral parlors stealing bodies from hospitals, because possession is 9/10th of actually obtaining a client who doesn’t want to pay extra for having the body transported elsewhere, and “there ‘s no law against it yet.” But I digress. (Wild, wild East.)
Thank you for your kind input into the licensing conversations.

Choice of venue can kill you even faster than choice of law! “Of course you win this dispute. It seems as clear as day from what I know. But yes, you will have to travel from Pittsburgh to North Bumflack in order to show that to the court. And no, you cannot get your expenses back.”

If you cannot afford to fight where the contract says you have to, you lose. Warning #2 for all small businesses. Warning #1 is, “a contract partner who deals in good faith matters more than anything. Crooks find a way to be crooked.”

FWIW, I am licensed only in Pennsylvania and make a point of emphasizing to clients that I cannot opine on the law of any other state. When that clause gets given away, the client has *always* given specific consent.

And read the comments on Chapter One as well. Why would you think you needed to protect your publishing name? Just wondering. Plus you may want to hold off for a few weeks until I get more chapters up here on this. You have an issue with strong and weak trademark. So don’t do anything until you have read more of this book. Just saying. (grin)

Oh, I won’t do anything until I read more. I’m so grateful you are sharing this information with us. Obviously my thinking is currently ill informed. I trust I will have a better understanding and better questions after I read all of your chapters!

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